UPC CoA 24/2025, UPC CoA 23/2025 – Hewlett-Packard Development Company, L.P. v Lama France

Expert Commentary

Full Decision Text

1 DECISION of the Court of Appeal of the Unified Patent Court concerning an application for withdrawal (R. 265 RoP) and an application for reimbursement of costs (R. 370.9 RoP) delivered on 24 July 2025 APPELLANT IN APPEAL PROCEEDINGS APL 2052/2025 AND RESPONDENT IN APPEAL PROCEEDINGS APL 1991/2025 (CLAIMANT IN THE PROCEEDINGS BEFORE THE COURT OF FIRST INSTANCE ACT 578697/2023 AND DEFENDANT IN THE PROCEEDINGS BEFORE THE COURT OF FIRST INSTANCE CC 7272/2024) HEWLETT-PACKARD DEVELOPMENT COMPANY, L.P., 10300 Energy Drive, Spring, Harris County, TX, 77389, USA (hereinafter referred to as "HPDC") represented by Mr Grégoire Desrousseaux, Attorney at law at the Paris Bar, SCP August Debouzy RESPONDENT IN THE APPEAL PROCEEDINGS APL 2052/2025 AND APPELLANT IN THE APPEAL PROCEEDINGS APL 1991/2025 (DEFENDANT IN THE PROCEEDINGS BEFORE THE COURT OF FIRST INSTANCE ACT 578697/2023 AND PLAINTIFF IN THE PROCEEDINGS BEFORE THE COURT OF FIRST INSTANCE CC 7272/2024) LAMA FRANCE, 241 Rue du Companet, 69140 Rillieux-la-Pape, France (hereinafter referred to as "LAMA") represented by Mr Henri Bourgeois, European Patent Attorney, Cabinet Germain Maureau LITIGATION PATENTS EP 2 089 230 EP 1 737 669 COMPOSITION OF THE CHAMBER Chamber 1b Klaus Grabinski, President of the Court of Appeal Emmanuel Gougé, legally qualified Judge and Judge-Rapporteur, Emanuela Germano, legally qualified Judge. LANGUAGE OF PROCEEDINGS French Call no: UPC CoA 24/2025 APL 2052/2025 App 32051/2025 UPC CoA 23/2025 APL 1991/2025 App 32255/20252025-07-24 CoA Luxembourg UPC CoA 24-2025 UPC CoA 23-2025 App 32051-2025 ORD 33657-2025 en-GB.pdfDeepL machine translation provided by www.veron.com 2 DECISION AND ORDER OF THE COURT OF FIRST INSTANCE CHALLENGED □ Decision on the merits of the Paris Local Division of 13 November 2024 in the main proceedings ACT 578697/2023 and CC 7272/2024 Reference : UPC CFI 358/2023 ACT 578697/2023 ORD 598511/2023 □ Order relating to legal costs and costs of proceedings of 10 January 2025 in the proceedings relating to costs App 66320/2024 Reference : UPC CFI 358/2023 ACT 578697/2023 App 66320/2024 ORD 68744/2024 SUMMARY OF FACTS AND PROCEDURE 1. On 13 October 2023, HPDC brought an infringement action against LAMA for the patents at issue before the Paris Local Division of the Unified Patent Court (hereinafter the "Local Division") against which LAMA counterclaimed for invalidity of the patents at issue. 2. By decision on the merits rendered on November 13, 2024, the Local Division, inter alia, declared patent EP 2 089 230 invalid and held LAMA liable for acts of infringement of patent EP 1 737 669 (hereinafter the "Decision on the Merits"). 3. On 13 January 2025, HPDC appealed the Decision on the Merits and the Order of the Local Division of 10 January 2024 referred to above (hereinafter the "Order") (APL 2052/2025, UPC CoA 24/2025). 4. On the same day, LAMA appealed the Decision on the merits (APL 1991/2025, UPC CoA 24/2025). 5. On 21 January 2025, HPDC and LAMA jointly requested the Court of Appeal to order a stay of both appeal proceedings until 30 June 2025 in order to reserve their rights, They stated that they had reached an agreement providing for the performance of reciprocal obligations to be implemented before that date and conditioning the reciprocal withdrawal of their appeal (App 3385/2025, APL 2052/2025 UPC CoA 24/2025 and App 3434/2025, APL 1991/2025 UPC CoA 24/2025). 6. The Court of Appeal ordered a stay of both appeal proceedings until 30 June 2025. 7. On 2 July 2025, HPDC filed an application to withdraw all of its claims against LAMA and agreed to the withdrawal of LAMA's applications (App 32051/2025 UPC CoA 24/2025). 8. On 3 July 2025, LAMA also filed an application to withdraw all of its applications against HPDC and agreed to the withdrawal of HPDC's applications (App 32255/2025 UPC CoA 23/2025). 9. The parties request that the Decision on the merits be set aside in its entirety, that the legal costs be borne by each party that has incurred them and that reimbursement of 60% of the costs of the proceedings be ordered pursuant to Rule 370.9 (b)(i) RoP.2025-07-24 CoA Luxembourg UPC CoA 24-2025 UPC CoA 23-2025 App 32051-2025 ORD 33657-2025 en-GB.pdfDeepL machine translation provided by www.veron.com 3 REASONS FOR THE DECISION 10. According to Rule 265.1 RoP, as long as no final decision has been taken, an applicant may ask to withdraw his application. The Court decides on the request for withdrawal after hearing the other party. The request for withdrawal will not be accepted if the other party has a legitimate interest in the case being heard by the Court. 11. In this case, the requests to withdraw the infringement action and the counterclaim for a declaration of invalidity are admissible if no final decision has been taken (CdA, 15 January 2025, APL 58979/2024, UPC CoA 637/2024, APL 58989/2024, UPC CoA 638/2024, APL 59000/2024, UPC CoA 639/2024, Avago v Tesla and CoA, 15 January 2025, APL 58696/2024, UPC CoA 629/2024, APL 58707/2024, UPC CoA 631/2024, APL 58726/2024, UPC CoA 632/2024, Avago Technologies International Sales v Tesla Germany and Tesla Manufacturing Brandenburg). 12. In view of the parties' mutual applications and consents, they have no legitimate interest in the case being decided by the Court, so that the withdrawal of the applications should be granted and the proceedings closed, in accordance with the provisions of Rule 265 RoP. 13. As the proceedings are closed, the Decision on the merits and the Order have no effect, so that there is no need to overturn them. there is no need to overturn them. 14. Although Article R.265.2 (c) RoP provides that a decision on costs must be made in accordance with Part 1, Chapter 5 RoP, a decision on costs is not necessary in this case insofar as both parties have asked the Court not to make a decision on costs. 15. If the action is withdrawn in accordance with Rule 265 RoP, the party liable for costs will be reimbursed 60%, in accordance with Rule 370.9 (b) (i) RoP, if the action is withdrawn before the end of the written procedure. 16. In the present case, as the written procedure has not been completed, each party's request for reimbursement is granted.2025-07-24 CoA Luxembourg UPC CoA 24-2025 UPC CoA 23-2025 App 32051-2025 ORD 33657-2025 en-GB.pdfDeepL machine translation provided by www.veron.com 4 DECISION The Court of Appeal : (i) grants the withdrawal of all the applications made by HPDC and LAMA and declares the proceedings closed ; (ii) orders that this decision be entered in the register; (iii) orders the reimbursement of 60% of the costs incurred by HPDC and LAMA respectively before the Court of Appeal; (iv) declares that there is no need to issue a decision on costs. Delivered in Luxembourg on 24 July 2025 Klaus Grabinski, President of the Court of Appeal Emmanuel Gougé, legally qualified Judge and Judge-Rapporteur Emanuela Germano, legally qualified Judge2025-07-24 CoA Luxembourg UPC CoA 24-2025 UPC CoA 23-2025 App 32051-2025 ORD 33657-2025 en-GB.pdfDeepL machine translation provided by www.veron.com

Key Holdings

• The Court of Appeal grants the withdrawal of all applications made by HPDC and LAMA, declaring the appeal proceedings closed.
• A request for withdrawal is admissible as long as no final decision has been taken and if the other party has no legitimate interest in the case being heard by the Court.
• Given the mutual applications and consents, neither party has a legitimate interest in the case being decided by the Court.
• As the appeal proceedings are closed, the challenged Decision on the merits and the Order from the Court of First Instance have no effect, thus there is no need to overturn them.
• Reimbursement of 60% of the costs incurred by HPDC and LAMA respectively before the Court of Appeal is ordered, in accordance with Rule 370.9 (b)(i) RoP, as the withdrawal occurred before the end of the written procedure.

Tags

• Costs
• Court of Appeal
• Rules of Procedure
• Settlement
• Unified Patent Court
• Withdrawal

Related Rules

• Rule 2 – Supplementary protection certificate
• Rule 3 – Power of staff of the Registry and a sub-registry to perform functions of the Registry
• Rule 2 – Supplementary protection certificate
• Rule 2 – Supplementary protection certificate

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